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Brown v. Electronic Arts, Inc.
United States District Court for the Central District of California
Case No. 2:09-cv-01598

and
In re: NCAA Student-Athlete Name & Likeness Licensing Litigation
(Keller, et al v. Electronic Arts, Inc.)
United States District Court for the Northern District of California
Case No. 4:09-cv-01967

            On July 31, 2013, the Ninth Circuit Court of Appeals filed opinions in two separate, yet similar, cases involving Electronic Arts ("EA") and two of its popular football franchises, Madden NFL and NCAA Football.  In the first case, former NFL player Jim Brown (widely regarded as one of the best NFL players of all time) filed suit against EA claiming that its use of his likeness in its Madden NFL franchise violated §43 (a) of the Lanham Act (KEY POINT: The Brown case, as decided, is based on the Lanham Act).  Keller's case, meanwhile, was a putative claim brought against EA claiming that the popular NCAA Football franchise violated  his (and others in the class) right of publicity under California Civil Code §3344 and California common law (as opposed to the Lanham Act).  At first blush, these cases seem quite similar, yet the results were drastically different.  In Brown, the Court found that EA's use of Brown's likeness was protected under the First Amendment.  However, in Keller the Court ruled that EA could not defend on First Amendment grounds and denied EA's motion to dismiss.  This all depends on whether the alleged infringing content is a trademark under the Lanham Act, or an individual's Right of Publicity.  When analyzing an infringement claim under the Lanham Act, courts primarily apply the Rogers test which focuses on the artistic relevance of the trademark (or in this case, likeness) in relation to the creative work.  Conversely, a right of publicity claim tends to be evaluated using the transformative use test which places a heightened burden on a content creator to show that a person's likeness is incidental to the overall work.

Why such different results?
           
            One might except two cases arising from nearly identical facts to have similar results, but the choice of claims is what dictated the tests applied and the differing results.  The Ninth Circuit looked to Brown v. Entertainment Merchants Ass'n to establish that videogames are protected under the First Amendment as expressive works because they, "communicate ideas—and even social messages—through many familiar literary devices (such as characters, dialogue, plot, and music) and through features distinctive to the medium (such as the player's interaction with the virtual world)."  Using this as a basis, the Court ruled that a §43 (a) Lanham Act claim fell within the Rogers test established by the California Supreme Court.  The Rogers test, established in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), is essentially a balancing test that seeks to weigh, "the public's First Amendment interest in free expression against the public's interest in being free from consumer confusion about affiliation and endorsement."  The Rogers test limits application of §43 (a) to expressive works,

[U]nless [the use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [use of trademark or other identifying material] explicitly misleads as to the source or the content of the work.

In evaluating Brown's suit against EA, the district court granted EA's motion for summary judgment on grounds that Brown had not alleged sufficient facts to satisfy either condition of the Rogers test.  In order to be "artistically relevant" under the Rogers test, the trademark (or in this case a person's likeness) must merely be "above zero".  The court reasoned that because EA prides itself, and the Madden series in particular, on its expressive goals of realism that Brown's likeness has, "at least some artistic relevance to EA's work."    The Court then looked to the second prong of the Rogers test and found Brown's argument lacking.  Under the second prong, a claimant must show that a defendant was explicitly misleading consumers as to "the source or the content of the work."  In this case, EA did not explicitly mislead consumers.  Although Brown is a famous NFL player, it is highly unlikely that any players of the Madden series would believe that he was "somehow behind [the game] or that [he] sponsors [EA's] product," because he is only one out of many stars included in the game.  While there may be some consumers who are mislead, their confusion cannot be attributed to an explicit representation by EA and therefore Brown's claim does not satisfy this facet of the test.

            Had Keller and the other parties to the class action suit brought claims under the Lanham Act, the result would have been similar.  However, because Keller involved claims of statutory and common law infringement of rights of publicity, the Ninth Circuit applied another test altogether.  EA attempted to defend on the basis of First Amendment freedom of speech via a motion to strike under California's Anti-SLAPP statute.  In order to prevail under the Anti-SLAPP statute the party asserting the defense must first make a prima facie showing that the suit arises from an act made by the defendant in connection with a public issue in furtherance of the person's "right of petition or free speech under the United States Constitution or the California Constitution."  It is uncontested that EA's Madden series satisfies this requirement in light of Brown v. Entertainment Merchants Ass'n.  However, the Court denied the motion to strike because EA did not satisfy the second requirement which requires the defendant have a likelihood of success on the merits.  The reasoning for this was that under the transformative use test, the Court believed that Keller had a legitimate claim against EA.
           
            Under the transformative use test, the California Supreme Court outlined five factors which should be taken into account when assessing whether a claimant's right of publicity has been violated.  These five considerations are whether:

(1) the celebrity likeness is one of the raw materials from which an original work is synthesized; (2) the work is primarily the defendant's own expression if the expression is something other than the likeness of the celebrity; (3) the literal and imitative or creative elements predominate in the work; (4) the marketability and economic value of the challenged work derives primarily from the fame of the celebrity depicted; and (5) an artist's skill and talent has been manifestly subordinated to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit the celebrity's fame.

The Ninth Circuit focused predominantly on No Doubt v. Activision Publishing to establish that EA's use of Keller's (and the other members of the class) likeness was not a transformative use.  Specifically, the Ninth Circuit reasoned that, like in No Doubt, EA represented Keller as, "what he was: the starting quarterback for Arizona State and Nebraska, and the game's setting is identical to where the public found [Keller] during his collegiate career: on the football field."  The focus on realism relied upon in Brown v. EA ended up being to EA's detriment in Keller under the transformative use test.  Unlike the Rogers test that requires artistic relevance to only be "above zero", the transformative use test requires a defendant to go further and create a work that is more than just a direct copy of a real-life person.  EA did argue that the Rogers test should be applied in this case as well.  The court, however, denied this argument reasoning that the Lanham Act and the Rogers test are in place to protect consumers from confusion, but the right of publicity is in place to protect the celebrity.

What is the effect on the games industry?

            Both of these decisions have significant repercussions for the gaming industry.  The Madden and NCAA franchises have long provided EA with predictable returns on their investment on a year-to-year basis, the increase in litigation is beginning to prove more trouble than it's worth for EA's partners.  Last month, the NCAA announced that due to  "the current business climate and costs of litigation" it would not be renewing its contract with EA which is set to expire in June 2014.  However, this could affect more than just EA.  The Keller decision in particular opens the door to litigation if any celebrity's likeness is utilized.  While parody exceptions will still likely cover most games that choose to employ a celebrity's likeness, this case sets precedent for potential legal woes.  More than that, the Keller decision in particular is a blow to game developers in that it is the first restriction on the First Amendment protections  to come out of Brown v. Entertainment Merchants Ass'n.

As always, we will monitor this case for new developments and update accordingly.
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